According to Law no. 84/1998 on trademarks and geographical indications, republished, the registration of a trademark takes effect from the date of the regulatory filing of the trademark and has a validity of 10 years. After the expiry of this period, renewal of the trademark becomes an essential step in the management and protection of the rights to that mark. Article 33 et seq. of the Act specifically set out the details and rules for the trademark renewal process.
1. How does renewal differ from initial registration?
Trademark renewal is a significantly different administrative process from the original trademark registration procedure. The initial trademark registration involves a series of steps that include filing an application, examining the application by OSIM, and, in certain cases, oppositions from other interested parties. This procedure can be complex and take more time.
On the other hand, trademark renewal is generally a simpler administrative procedure. There are usually no exhaustive examinations or opposition periods to delay the process. This makes renewal a faster and more predictable procedure.
Another important aspect is that renewal does not usually involve significant brand changes. The initial registration may involve major changes to the appearance, colours or message of the mark, while renewal is essentially a confirmation of existing rights and brand identity.
Although the initial registration of the trademark is a necessary process for the acquisition of rights, trademark renewal is a subsequent procedure that has significant advantages, such as simplicity and speed (according to art. 36 para. (1): “The renewal of registration shall be entered in the Register of Trademarks and published in the Official Bulletin of Industrial Property within maximum 3 months from the submission to OSIM of the application for renewal.”), which makes it essential for the protection and maintenance of trademark property rights in the long term.
2. Benefits of renewal
This process becomes essential after the initial validity period of the brand expires and has a significant impact on the sustainability and success of a business.
First, renewal of the trade mark ensures that the proprietor continues to hold the exclusive rights to that trade mark, thereby ensuring continued protection against unauthorised use.
Second, brand renewal helps keep in touch with customers and maintain the reputation built around the brand. This ensures business continuity and customer loyalty.
3. Nota bene!
In the trademark renewal process, there are some important aspects that we need to keep in mind.
Firstly, an application for renewal of trademark registration may be filed by the proprietor of the trade mark or by another person authorised to do so by law or by contract.
With regard to the time of filing the application for renewal, it must be registered no later than 6 months before the expiry of the trademark registration. The renewal of the trade mark shall take effect from the day following expiry of the term of protection in force. This ensures a smooth transition between the old and new protection period.
